Chanel has prevailed – to an extent – in its latest fight to protect its iconic double “C” logo. The European Union’s General Court (“General Court”) held on Tuesday that a lookalike trademark being marketed by an Italian wholesale jewelry company infringes Chanel’s famous mark. The EU General Court’s decision overturns an unfavorable ruling from the European Union Intellectual Property Office (“EUIPO”) Appeals Board.
According to the General Court, China-born, Spain-based Li Jing Zhou’s trademark for two interlocking “S” shapes for use on jewelry in connection with his company Golden Rose 999 Srl, bears “remarkable similarities” to Chanel’s mark, and as a result, could give rise to consumer confusion.
In prior proceedings, the EUIPO held that "the differences between [Zhou’s trademark and Chanel’s trademark] drawings were not insignificant" and that "[Zhou’s trademark] produced in the informed user a different overall impression" than that famous Chanel logo.
However, the General Court has since held that the EUIPO "erred in considering that [Zhou’s] drawing has a unique character to Chanel's monogram" and that actually, both drawings have "striking similarities." The ruling also emphasizes the possibility of Zhou’s trademark being used in different angles, and thus, would appear more like the Chanel mark, which would likely give rise to confusion.
In its decision, which can be appealed to the European Court of Justice, the General Court formally annulled the EUIPO’s decision but rejected Chanel’s request to have the contested trademark declared invalid, saying this was not within its purview to do so. Instead, the General Court held that it is for the EUIPO to draw the consequences of the judgment and to take the necessary measures to comply with it.
Chanel brought an application before the Cancellation Division of the EUIPO to invalidate the mark in December 2013. In July 2014, the Cancellation Division rejected Chanel’s application. The luxury brand lodged an appeal in September that year, but was again rejected, that time by the Board of Appeal.